NTP, INC. v. RESEARCH IN MOTION, LTD.
03-1615
United States Court of Appeals for the Federal Circuit
August 2, 2005
Henry C. Bunsow, Howrey Simon Arnold & White, LLP, of San Francisco, California, argued for defendant-appellant. With him on the brief were R. Scott Wales and David Makman, of San Francisco, California; Robert C. Laurenson, of Irvine, California; and Celine T. Callahan, of Washington, DC. Of counsel were David W. Long and Heather Diane McAllister, of Washington, DC.
Appealed from: United States District Court for the Eastern District of Virginia
Chief Judge James R. Spencer
Before MICHEL,* Chief Judge, SCHALL, and LINN, Circuit Judges.
LINN, Circuit Judge.1
Research In Motion, Ltd. (“RIM“) appeals from a judgment of the U.S. District Court for the Eastern District of Virginia (“district court“) entered in favor of NTP, Inc. (“NTP“) following a jury verdict that RIM‘s BlackBerry™ system infringed NTP‘s U.S. Patents Nos. 5,436,960 (“the ‘960 patent“); 5,625,670 (“the ‘670 patent“); 5,819,172 (“the ‘172 patent“); 6,067,451 (“the ‘451 patent“); and 6,317,592 (“the ‘592 patent“)
I. BACKGROUND
The technology at issue relates to systems for integrating existing electronic mail systems (“wireline” systems) with radio frequency (“RF“) wireless communication networks, to enable a mobile user to receive email over a wireless network.
A. Overview of Electronic Mail Technology
Traditional email systems operate in the following manner: To send an email, a user begins by composing a message in his or her email client. An “email client” is a user interface, such as Microsoft Outlook™, Eudora™, or Hotmail™, that organizes and displays a user‘s email messages and provides the user with a means of creating and sending email messages. The message begins with a specific destination address, i.e.,
B. Problems With the Prior Art Systems
As societal dependence on email and computers increased throughout the 1990s, so did the demand for mobile internet access. See generally Richard Duffy & Denis Gross, World Without Wires, 22 Communications Int‘l 72 (June 1995) (describing “user demand” as “one of the most important driving factors behind the mobile data market“). The increased portability of computers via laptop machines exacerbated this demand. See id.; ‘960 patent, col. 4, ll. 19-39. Available methods of remote internet access were cumbersome and inefficient for the traveling businessperson, however, as the patents-in-suit explain:
As personal computers are used more frequently by business travellers, the problem of electronic mail delivery
becomes considerably more difficult. A business traveller carrying a portable PC has great difficulty in finding a telephone jack to connect the PC to fetch electronic mail from either a host computer or a gateway switch. Connections for a PC‘s modem are difficult to find in airports . . . . Hotels and motels often have internal PABX‘s that prevent calls from automatically being placed by the user‘s PC to electronic mail gateway switches to receive information. . . . The inability to find an appropriate connection to connect the PC modem when travelling has contributed to the degradation of electronic mail reception when the recipient is travelling.
‘960 patent, col. 3, l. 60 – col. 4, l. 12. RIM‘s technical documentation for its BlackBerry products echoes the undesirability of these constraints:
Typically, mobile professionals use a laptop when traveling and dial-in to the corporate email server from a hotel room to manage an inbox full of email. The more adventurous use special software to send email notification to a pager or cell phone so they know what is in their inbox before spending the time and effort to dial-in. Focus groups and market research on mobile email revealed common complaints with dialing-in – the inconvenience of lugging a laptop around just for email; the trouble of finding a connection and dialing-out of the hotel; the difficulty of negotiating corporate dial-in security; and the cost of phone charges when dialing-in to the corporate server.
Research in Motion Ltd., Technical White Paper BlackBerry Enterprise Edition™ 3 (2001) (“White Paper“).
C. The Patents-in-Suit
Inventors Thomas J. Campana, Jr.; Michael P. Ponschke; and Gary F. Thelen (collectively “Campana“) developed an electronic mail system that was claimed in the ‘960, ‘670, ‘172, ‘451, and ‘592 patents. The ‘960 patent, filed on May 20, 1991, is the parent of a string of continuation applications. The most recent patent, the ‘592 patent, filed December 6, 1999, is a continuation of the ‘451 patent, filed September 28, 1998. The ‘451 patent, in turn, is a continuation of the ‘172 patent, which itself originates from
Campana‘s particular innovation was to integrate existing electronic mail systems with RF wireless communications networks. See ‘960 patent, col. 18, ll. 32-39. In simplified terms, the Campana invention operates in the following manner: A message originating in an electronic mail system may be transmitted not only by wireline but also via RF, in which case it is received by the user and stored on his or her mobile RF receiver. The user can view the message on the RF receiver and, at some later point, connect the RF receiver to a fixed destination processor, i.e., his or her personal desktop computer, and transfer the stored message. Id. at col. 18, ll. 39-66. Intermediate transmission to the RF receiver is advantageous because it “eliminat[es] the requirement that the destination processor [be] turned on and carried with the user” to receive messages. Id. at col. 18, ll. 44-46. Instead, a user can access his or her email stored on the RF receiver and “review . . . its content without interaction with the destination processor,” id. at col. 18, l. 67 – col. 19, l. 1, while reserving the ability to transfer the stored messages automatically to the destination processor, id. at col. 19, ll. 1-2. The patents-in-suit do not disclose a method for composing and sending messages from the RF receiver.
D. The Accused System
RIM is a Canadian corporation with its principal place of business in Waterloo, Ontario. RIM sells the accused BlackBerry system, which allows out-of-office users to continue to receive and send electronic mail, or “email” communications, using a small
The BlackBerry system uses “push” email technology to route messages to the user‘s handheld device without a user-initiated connection. There are multiple BlackBerry email “solutions” that interface with different levels of the user‘s email system. In the Desktop solution, the BlackBerry email redirector software, the Desktop Redirector, is installed on the user‘s personal computer. In the Corporate solution, different BlackBerry email redirector software, the BES program, is installed on the organizational user‘s mail server, where it can function for the benefit of the multiple users of that server. Also at issue in this case is RIM‘s Internet solution of the BlackBerry system. The Internet solution operates in a manner similar to the Corporate solution, but it executes a different email redirector software, Internet Redirector. In either version, the BlackBerry email redirector software merges seamlessly with the user‘s existing email system. The operation of the email redirector software is transparent to the user‘s desktop email client and the organizational user‘s mail server. That is, the user‘s email system does not recognize or incorporate the BlackBerry wireless system into its operation. No modification of the underlying email system is required to run RIM‘s wireless email extension. When new mail is detected in the Desktop solution, the Desktop Redirector is notified and retrieves the message from the mail server. It then copies, encrypts, and routes the message to the BlackBerry “Relay”
RIM‘s system also permits users to send email messages over the wireless network from their handhelds. This functionality is achieved through the integration of an RF transmitter and a processor in the BlackBerry handheld unit. The processor allows the user to manipulate, view, and respond to email on his or her BlackBerry handheld. Sending a message from the handheld requires the same steps as the
E. Procedural History
On November 13, 2001, NTP filed suit against RIM in the U.S. District Court for the Eastern District of Virginia. NTP alleged that over forty system and method claims from its several patents-in-suit had been infringed by various configurations of the BlackBerry system (comprised of the numerous handheld units; the BES, the Desktop Redirector, and the ISP Redirector software; and the associated wireless networks).
In an Order dated August 14, 2002, the district court construed thirty-one disputed claim terms. NTP, Inc. v. Research in Motion, Ltd., No. 3:01CV767 (E.D. Va. Aug. 14, 2002) (“Claim Construction Order“). In that Order, the district court “construed the disputed terms according to their plain and ordinary meaning, as supported by the specification and prosecution history.” Id., slip op. at 3. The Order listed the claim terms in contention and their corresponding constructions without additional reasoning or analysis. See id., slip op. at 4-9. A series of summary judgment motions followed the court‘s Markman decision. Setting forth several alternate theories, RIM asked for summary judgment of both non-infringement and invalidity. The issues raised in two of
For its part, NTP asked the district court to grant partial summary judgment of infringement on four claims of the patents-in-suit. In its motion, NTP argued: (1) that the 800 and 900 series BlackBerry handheld units infringed claim 248 of the ‘451 patent and claim 150 of the ‘592 patent; (2) that the BES software infringed claim 653 of the ‘592 patent; and (3) that the BlackBerry system, software, and handhelds infringed claim 15 of the ‘960 patent. See NTP, Inc. v. Research in Motion, Ltd., No. 3:01CV767 (E.D. Va. Nov. 4, 2002) (“Order Granting Summary Judgment of Infringement“). RIM cross-moved for summary judgment of non-infringement, arguing that its products lacked certain limitations required by the asserted claims. Id., slip op. at 4. The district court agreed with NTP, holding that “no genuine issue of material fact” existed as to infringement of the four claims. Id. at 26. Accordingly, the district court granted summary judgment, except as to the issue of infringement of claim 15 of the ‘960 patent or claim 248 of the ‘451 patent by the BlackBerry series 5810 handheld device. That issue was reserved for the jury.
Following the jury verdict, RIM moved the court for JMOL or, in the alternative, for a new trial.3 The court denied these motions. NTP, Inc. v. Research in Motion, Ltd., No. 3:01CV767 (E.D. Va. May 23, 2003) (“JMOL Order“). On August 5, 2003, the district court entered final judgment in favor of NTP. The court awarded monetary damages totaling $53,704,322.69, with the following approximate division: (1) compensatory damages of $33 million; (2) attorneys’ fees of $4 million; (3) prejudgment interest of $2 million; and (4) enhanced damages of $14 million. Final Judgment, slip op. at 1. The court also entered a permanent injunction against RIM, enjoining it from
RIM timely appealed from the district court‘s final judgment and injunction. We have jurisdiction pursuant to
II. ANALYSIS
A. Claim Construction
In the district court, NTP ultimately asserted against RIM, and RIM was found to have infringed, sixteen system and method claims of five different patents owned by NTP. This includes both the claims resolved by the court in NTP‘s favor on summary judgment and the claims submitted to the jury for a determination of infringement. These claims are: claims 15, 32, and 34 of the ‘960 patent; claim 8 of the ‘670 patent; claim 199 of the ‘172 patent; claims 28, 248, 309, 313, and 317 of the ‘451 patent; and claims 40, 150, 278, 287, 653, and 654 of the ‘592 patent.4 All of these claims, with the exception of claim 150 of the ‘592 patent, are dependent claims. The parental lineage of the adjudicated claims is indicated in the following table:
| Patent | Disputed claim → Parental Lineage |
|---|---|
| ‘960 | 15 → 11 → 1 |
| 32 → 28 → 18 | |
| 34 → 18 | |
| ‘670 | 8 → 4 → 1 |
| ‘172 | 199 → 194 |
| ‘451 | 28 → 26 → 1 |
| 248 → 247 → 246 | |
| 309 → 308 → 250 | |
| 313 → 311 | |
| 317 → 313 → 311 | |
| ‘592 | 40 → 25 → 10 → 4 → 1 |
| 150 | |
| 278 → 232 → 186 → 171 → 156 → 150 | |
| 287 → 150 | |
| 653 → 652 | |
| 654 → 653 → 652 |
On appeal, RIM challenges the judgment of infringement with respect to each of the asserted claims. RIM argues that the district court erred in construing the claim terms: (a) “electronic mail system” (appearing in the ‘960, ‘670, and ‘172 patents); (b) “gateway switch” (appearing in the ‘960 patent); and (c) “originating processor” and “originated information” (appearing in the ‘960, ‘670, and ‘592 patents). Further, RIM argues that the district court erred in failing to impose general restrictions on certain asserted claims and in failing to construe certain terms relating to asserted claims; specifically: (d) a “dual pathways” limitation, requiring that at least one destination processor be accessible through both a wireline and an RF pathway (relating to asserted claims of the ‘960 and ‘670 patents); (e) a limitation requiring that the RF receiver and destination processor be “separate and distinct” entities (relating to asserted claims of the ‘960, ‘670, and ‘592 patents, and to certain asserted claims of the
1. Claim Construction Precedent
Because NTP‘s patents all derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents); Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1460 & n.2 (Fed. Cir. 1998) (noting that it was proper to consider the prosecution histories of two related re-examination patents originating from the same parent, to determine the meaning of a term used in both patents). We thus draw distinctions between the various patents only where necessary.
Claim construction presents a question of law that this court reviews de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). “It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., No. 03-1269, 03-1286, 2005 U.S. App. LEXIS 13954, at *22 (Fed. Cir. Jul. 12, 2005) (en banc) (internal quotations omitted). The words of a claim are generally given their ordinary and customary meaning, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. To ascertain the meaning of a claim term, “the court looks to those sources available to the public that show what a person of ordinary skill in the art would have understood disputed claim language to mean. Those sources include the words of the claims themselves, the
With these general principles in mind, we turn now to RIM‘s specific challenges to the district court‘s claim construction determinations.
2. Disputed Terms
a. “Electronic Mail System”
The term “electronic mail system” appears in all of the asserted claims of the ‘960, ‘670, and ‘172 patents. For simplicity, we will use system claim 1 (from which disputed claim 15 depends) and method claim 18 (from which disputed claims 32 and 34 depend) of the ‘960 patent as exemplars. Claim 1 of the ‘960 patent reads as follows:
1. A system for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising:
at least one gateway switch in the electronic mail system, one of the at least one gateway switch receiving the originated information and storing the originated information prior to transmission of the originated information to the at least one of the plurality of destination processors;
a RF information transmission network for transmitting the originated information to at least one RF receiver which transfers the originated information to the at least one of the plurality of destination processors;
at least one interface switch, one of the at least one interface switch connecting at least one of the at least one gateway switch to the RF information transmission network and transmitting the originated information received from the gateway switch to the RF information transmission network; and wherein
the originated information is transmitted to the one interface switch by the one gateway switch in response to an address of the one interface switch added to the originated information at the one of the plurality of originating processors or by the electronic mail system and the originated information is transmitted from the one interface switch to the RF information transmission network with an address of the at least one of the plurality of destination processors to receive the originated information added at the originating processor, or by either the electronic mail system or the one interface switch; and
the electronic mail system transmits other originated information from one of the plurality of originating processors in the electronic mail system to at least one of the plurality of destination processors in the electronic mail system through a wireline without transmission using the RF information transmission network.
‘960 patent, col. 49, ll. 2-45 (emphases added). Claim 18 of the ‘960 patent reads as follows:
18. A method for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising:
transmitting the originated information originating from the one of the plurality of originating processors to a gateway switch within the electronic mail system;
transmitting the originated information from the gateway switch to an interface switch;
transmitting the originated information received from the gateway switch from the interface switch to a RF information transmission network;
transmitting the originated information by using the RF information transmission network to at least one RF receiver which transfers the originated information to the at least one of the plurality of destination processors; and
transmitting other originated information with the electronic mail system from one of the plurality originating processors in the electronic mail system to at least one of the plurality of destination processors in the electronic mail system through a wireline without transmission using the RF information transmission network; and wherein
the originated information is transmitted to the interface switch by the gateway switch in response to an address of the interface switch which has been added to the originated information at the one of the plurality of originating processors or by the electronic mail system and the originated information is transmitted from the interface switch to the RF information transmission network with an address of the at least one of the plurality of destination processors to receive the originated information which has been added at the originating processor or by either the electronic mail system or the interface switch.
‘960 patent, col. 52, ll. 11-49 (emphases added).
The district court construed “electronic mail system” as:
A type of communication system which includes a plurality of processors running electronic mail programming wherein the processors and the electronic mail programming are configured to permit communication by way of electronic mail messages among recognized users of the electronic mail system. The various constituent processors in the electronic mail system typically function as both “originating processors” and “destination processors.”
Claim Construction Order, slip op. at 4.
RIM argues there are two ordinary meanings of “electronic mail system“: a broad definition that encompasses “communicating word processors, PCs, telex, facsimile, videotex, voicemail and radio paging systems (beepers)” and a narrow definition that defines the term in the context of “pull” technology. Asserting that Campana endorsed the pull technology definition during prosecution, RIM argues that “electronic mail system” includes a pull technology requirement. RIM also argues that during prosecution Campana characterized an “electronic mail system” as a wireline system to distinguish over the Zabarsky reference. Thus, RIM argues that “electronic mail
NTP responds that the district court‘s claim construction of “electronic mail system” is correct and is consistent with the written description. NTP contends that RIM‘s proposed construction of “electronic mail system” as requiring pull technology contravenes the plain language of the claim and is inconsistent with Campana‘s disclosure. Further, NTP argues that RIM never raised its pull technology claim construction at the Markman hearing, but in fact argued the opposite. Finally, NTP argues that RIM‘s requirement that “electronic mail system” be limited to a wireline only system simply cites the prior art description of those terms, and not Campana‘s use of the term as including wireless connections.
At the outset, we note that NTP correctly points out that RIM did not argue its pull technology construction before the district court, instead arguing that an electronic mail system is limited to a wireline only system. See J.A. at 2821-22 (arguing that “electronic mail system” should be construed as “a system of single processors or groups of processors linked by a wire line system, such as the PSTN [(“Public Switch Telephone Network“)], that provides a system for transmitting information between at least two computers“). We have previously held that presenting proposed claim constructions which alter claim scope for the first time on appeal invokes the doctrine of waiver as to the new claim constructions. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1370 (Fed. Cir. 2002) (“[A] waiver may occur if a party raises a new issue on appeal, as by, e.g., presenting a new question of claim scope . . . .” (internal quotation marks
The district court‘s claim construction, which includes various architectures of single processors and groups of processors, is correct. The claims themselves recite that an “electronic mail system” includes various configurations of originating processors and destination processors that communicate via wireline connections or over an RF transmission network. See, e.g., ‘960 patent, claim 1. Moreover, the written description recognizes that electronic mail systems may have various processor architectures. See, e.g., id. at col. 1, l. 60 – col. 2, l. 22; id. at col. 2, ll. 13-17 (“It should be understood that the illustrated architecture of the single and associated groups of processors is only representative of the state of the art with numerous variations being utilized.“); see also ‘670 patent, col. 1, l. 64 – col. 2, l. 25; ‘172 patent, col. 1, l. 65 – col. 2, l. 25.
RIM‘s premise that the “electronic mail system” is limited to a wireline only system is flawed. The plain language of the claim 1 preamble recites that the claimed system transmits originated information “from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system.” ‘960 patent, claim 1. Thus, all of the originating and destination processors are recited in the claims as being contained in the “electronic
The written description expressly indicates that the “electronic mail system” in the patent claims may include wireless connections. Campana described prior art “[e]lectronic mail services” as “basically a wire line-to-wire line, point-to-point type of communications” system. Id. at col. 1, ll. 52-54 (emphasis added). The use of the term “basically” suggests that an electronic mail system may include other types of connections, including wireless connections. Moreover, Campana provided an example of one prior art electronic mail system in commercial use, stating “FIG. 1 illustrates a block diagram of a typical electronic mail system in commercial use such as by AT&T Corporation.” Id. at col. 1, ll. 60-62. In this prior art electronic mail system, “groups of processors . . . may be distributed at locations which are linked by the [PSTN]. The individual processors may be portable computers with a modem which are linked to the [PSTN] through wired or RF communications as indicated by a dotted line.” Id. at col. 1, l. 66 – col. 2, l. 4 (emphasis added). Figure 1 depicts various processors that are all connected to the PSTN via either wired or wireless links. The prior art electronic mail system depicted in Figure 1 is incorporated into Figure 8, which Campana describes as a “block diagram of an electronic mail system in accordance with the present invention.”5 Id. at col. 22, ll. 60-61. Accordingly, because RIM‘s argument that the term
Our review of the prosecution history reveals no disclaimers or disavowals limiting an “electronic mail system” to a wireline only system. RIM cobbles together statements from the prosecution history that refer to an electronic mail system as having wireline connections. While it is true that Campana often focused on wireline connections in describing electronic mail systems, this focus is understandable given his acknowledgment that electronic mail systems are “basically a wire line-to-wire line, point-to-point type of communications” system. Id. at col. 1, ll. 52-54. Contrary to RIM‘s assertions, however, Campana did not accept a narrow definition of “electronic mail system” or disclaim subject matter, so as to limit the term “electronic mail system” to a wireline only system. Instead, Campana expressly stated that information sent between the originating and destination processors located in “an electronic mail system” in his invention could be accomplished either through the RF transmission network or a wireline. See
Because we discern no error, we affirm the district court‘s claim construction of “electronic mail system.”
b. “Gateway Switch”
The term “gateway switch” appears only in the asserted claims 15, 32, and 34 of the ‘960 patent. As before the district court, RIM bases its construction of the term on its argument that Campana‘s “electronic mail system” implemented a “pull” email (Cont‘d. . . .) used in the patents-in-suit is limited to an all “‘wireline’ system.” Thus, any wireless connection, even a pull connection, suffices to defeat RIM‘s argument.
c. “Originating Processor” and “Originated Information”
The parties dispute the construction of the term “originating processor” recited in the claims of the ‘960, ‘670, and ‘592 patents6 and “originated information” recited in the claims of the ‘960, ‘670, ‘592, and ‘451 patents.7 Claim 1 of the ‘960 patent, from which claim 15 ultimately depends, again is exemplary and states in pertinent part:
1. A system for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising:
at least one gateway switch in the electronic mail system, one of the at least one gateway switch receiving the originated information and storing the originated information prior to transmission of the originated information to the at least one of the plurality of destination processors; a RF information transmission network for transmitting the originated information to at least one RF receiver which transfers the originated information to the at least one of the plurality of destination processors;
at least one interface switch, one of the at least one interface switch connecting at least one of the at least one gateway switch to the RF information transmission network and transmitting the originated information received from the gateway switch to the RF information transmission network; and wherein
the originated information is transmitted to the one interface switch by the one gateway switch in response to an address of the one interface switch added to the originated information at the one of the plurality of originating processors or by the electronic mail system and the originated information is transmitted from the one interface switch to the RF information transmission network with an address of the at least one of the plurality of destination processors to receive the originated information added at the originating processor, or by either the electronic mail system or the one interface switch . . . .
‘960 patent, col. 49, ll. 2-38 (emphases added).
The district court construed “originating processor” as “[a]ny one of the constituent processors in an electronic mail system that prepares data for transmission through the system.” Claim Construction Order, slip op. at 5. The court construed “originated information” as “[t]he message text of an electronic mail message.” Id., slip op. at 6 (noting an exception for the term as used in a patent which is not disputed on appeal).
RIM argues that “originating processor” is correctly construed to mean a processor that initiates or starts the transmission of data through the system, thereby excluding any of the “constituent processors” in the system which subsequently handle the data. It argues that “originated information” is the electronic mail message
NTP responds that this dispute centers on whether an “originating processor” can include gateway switches. Before the district court, NTP urged that “originating processor” be construed to include not only “that processor upon which the sender types the message,” but also “all of the constituent processors in an electronic mail system that run electronic mail programming to format and initiate transmission of electronic mail messages.” NTP‘s Claim Construction Mem. at 37. NTP argues that RIM‘s proposed construction is erroneous because it ignores language in the written description specifying that a gateway switch can originate information, and thus would exclude embodiments in the written description. NTP argues that a construction which limited “originating processor” to only processors upon which senders actually type the electronic mail message is not required by RIM‘s dictionary definitions.
As we shall explain, we conclude that the district court erred in its claim construction of the term “originating processor.” The term “originating processor” is properly construed as “a processor in an electronic mail system that initiates the transmission of a message into the system.” We do not hold that the “originating processor” is always the processor on which text of the email message was created. As a practical matter this will probably be the case. However, there could be a situation
Further, we conclude that the district court did not err in construing “originated information” as “[t]he message text of an electronic mail message.” RIM focuses its argument on the term “originating processor.” Indeed, RIM presents no independent argument that “originated information” means anything other than the text of an electronic mail message to be transmitted in the electronic mail system. We see no reason to disturb the district court‘s claim construction of the term “originating information.”
We begin with the language of the claims. See PSC Computer Prods., Inc. v. Foxconn Int‘l, 355 F.3d 1353, 1359 (Fed. Cir. 2004). Claim 1 of the ‘960 patent recites:
1. A system for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising: . . .
at least one gateway switch in the electronic mail system . . .
at least one interface switch . . . .
‘960 patent, col. 49, ll. 2-19 (emphases added). Construing “originating processor” to mean the processor that is the origin of the email message text comports with the goal of the system—to move “originated information” from the processor where the email message text originated to the processor(s) where it is intended to be received. Moreover, that construction is consistent with the overall context of the claim language. Claim 1 of the ‘960 patent contains a number of limitations relating to devices that process data, including, inter alia: “a plurality of originating processors,” “at least one
In addition, as claim 1 above recites, the “originated information” originates from the “originating processor.” ‘960 patent, col. 49, ll. 2-3. Thus, the plain language of the claims indicates that “originating processor” is not referring to every component that initiates data. Rather the “originating processor” is, more precisely, the processor that is the source of the “originated information“—the text of the electronic mail message.
Also, the claim language shows how a gateway switch is not included within the larger term “originating processor,” but is rather a separate component from an “originating processor.” That is because the “originated information” is transmitted from an “originating processor” to a gateway switch. Indeed, the “originating processor” and the gateway switch initiate different types of data. “Originated information“—the electronic mail message—originates with the “originating processor.” By contrast, the gateway switch is never described as being the origin of the “originated information.” Rather, it merely “receives” the “originated information” from the “originating processor.”
The written description is consistent with this interpretation and reveals that two different types of information are “originated” and transmitted within the claimed invention. First, there is “originated information.” As the district court correctly held, “originated information” refers to the text of the electronic mail message being transmitted. One could analogize this to the contents of a physical letter one mails to a recipient via the postal system. Second, in the claimed invention there is also what one might call address information or destination information. This refers to an identifier of the intermediate components and/or the destination processor(s) to which the electronic message text should be delivered. See, e.g., ‘960 patent, col. 24, ll. 31-46 (discussing “address of the interface switch” and “identification number of the RF receiver“). Address information originated from a gateway switch or interface switch is never described as itself the “originated information” or the “other originated information.” Rather, it is described as separate information which is added to the “originated information” which came from an originating processor. See, e.g., id. at col. 21, ll. 54-56 (text notes that the address of the interface switch can be added “to the information
From the written description, one skilled in the art would understand an “originating processor” to refer to a processor where “originated information“—the electronic mail message text—is introduced into the electronic mail system. In some cases, this “originating processor” is the point at which some or all of the second type of information, the address information, is added. In other cases, after the “originating processor” sends the “originated information” to a gateway switch, the gateway switch then “originates” and appends additional address information onto the “originated information.” A user typing at the originating processor does need to provide at least some address destination information—for example, that the email message is intended
The term “originating processor” does not encompass every constituent processor that initiates data into the system. “Originating processor” refers more precisely to the processor that initiates the electronic message text into the system. It is correct to conclude that other components besides an “originating processor” “originate” information. For example, components such as the gateway switches originate some of the address information to get the electronic message from the “originating processor” to the proper destination processor(s). However, there is nothing in the written description to suggest that one skilled in the art would blur the distinction between a component such as a gateway switch that sometimes “originates” address information, and an “originating processor,” which is a separately labeled and separately claimed component than a gateway switch or an interface switch.
The specification states that Figure 1 shows that “[c]ommunications between an originating processor A-N, which may be any of the processors within the groups of associated processors #1-#3 or processor #N and a destination processor A-N are completed through the public switch telephone network 12 to one or more gateway switches . . . 14.” ‘960 patent, col. 2, ll. 23-28 (emphases added). This passage explains that the electronic mail message originates from the “originating processor” and then moves “to” an associated gateway switch. Thus, the “originating processor” is not a generic term referring to all data-generating constituent processors in a system, but more precisely refers to a processor that is separate from the gateway switches. Moreover, the written description repeatedly refers to the “originating processor” where the electronic mail message text is generated. See, e.g., id. at col. 3, ll. 12-21 (“Finally,
Components other than an “originating processor” can initiate data. The written description describes how, for example, “the identification of the RF receiver 119 and the address of the interface switch may be implemented by the originating processor A-N of one of the computing systems #1-#N, a gateway switch 14 or an interface switch 304 . . . .” Id. at col. 24, ll. 42-46. This shows that three different components can initiate address information: (1) an “originating processor” A-N; (2) a gateway switch 14; or (3) an interface switch 304. However, simply because the “originating processor” is but one of three separate, differently named and labeled components that can serve as the initiator of address information, does not mean that the term “originating processor” covers all of these different components. If “originating processor” referred to all three components, then the specification would simply read “the identification of the RF receiver 119 may be implemented by an originating processor.”
The specification makes clear that it may take several processors in Campana‘s claimed invention to successfully initiate an electronic mail message. As Campana
The written description further describes how either the “originating processor,” “gateway switch,” or “interface switch” can be used to add information needed to transmit the electronic mail message, such as addressing data. See id. at col. 22, ll. 24-26 (“The address of the destination processor may also be added to the information
See ‘960 patent, col. 28, ll. 10-13 (“Fig[ure] 11 summarizes electronic mail message entry methods for messages (information) originating from originating processors within an electronic mail system.” (emphasis added)). The arrows show the flow of the “originated information” from the “originating processor,” the first processor in the system where the information is originated, to a gateway switch 14, and then to an interface switch 304. Campana describes the flow of data in the various entry methods. For example, in “entry method 1” the “originating processor” itself adds the appropriate destination address data. Id. at col. 28, ll. 13-17. When the “originated information” then reaches a gateway switch 14, the gateway switch takes no action, because all of the address data necessary at that point has already been added by the “originating processor.” By contrast, in “entry method 3,” a gateway switch, after receiving the
This shows how the “originating processor” merely refers to the first (initiating) processor of the “originated information.” A gateway switch is not an “originating processor.” While the gateway switch serves as an initiator of address information, as in entry methods 3, 4, and 5, a gateway switch only does this after it gets the “originated information” from the “originating processor.” “Originating processor” is not an umbrella term referring to all of the processors that add data into the system, but rather would be understood to one skilled in the art to be the first processor, or the initial source of the “originated information” or email message text. All three different components in Figure 11, an “originating processor,” a “gateway switch,” and an “interface switch,” are initiating address information. “Originating processor” refers to one of these components—the first processor, and not all three. Thus, the “originating processor” is the sole processor that initiates the transmission of the electronic mail message text into the electronic mail system and is separate from the gateway or interface switches.
d. “Dual Pathways”
RIM argues that claim 8 of the ‘670 patent and claims 15, 32, and 34 of the ‘960 patent, when properly construed, require “‘dual pathways’ . . . whereby at least one of the destination processors in the system must be reachable through two independent
We begin our analysis with the words of the claims.8 Vitronics, 90 F.3d at 1582. We refer again to claim 1 of the ‘960 patent, from which claim 15 ultimately depends, which is illustrative and states in pertinent part:
1. A system for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising: . . .
a RF information transmission network for transmitting the originated information to at least one RF receiver which transfers the originated information to the at least one of the plurality of destination processors; . . .
the electronic mail system transmits other originated information from one of the plurality of originating processors in the electronic mail system to at least one of the plurality of destination processors in the electronic mail system through a wireline without transmission using the RF information transmission network.
‘960 patent, col. 49, ll. 2-45 (emphases added).
In considering RIM‘s proposed “dual pathways” limitation, we begin by noting that the preamble of claim 1 of the ‘960 patent limits the claim. Under our precedent, a
Because these limitations of claim 1 of the ‘960 patent derive their antecedent basis from the claim 1 preamble and are necessary to provide context for the claim limitations, the use of these limitations in the preamble limits the claim. Eaton, 323 F.3d at 1339; Catalina Mktg., 289 F.3d at 808. The limitations of claim 1 “at least one of a plurality of destination processors” and “electronic mail system” are first recited in the preamble. ‘960 patent, col. 49, ll. 2-45 (claim 1). The antecedent basis of the disputed claim limitation “to the at least one of the plurality of destination processors,” id. at col.
RIM‘s assertion that claim 1 of the ‘960 patent requires that “[t]he same destination processor must therefore simultaneously be ‘in an electronic mail system’ and reachable through an ‘RF information transmission network‘” is well-supported. RIM correctly argues that the claim language “a RF information transmission network for transmitting . . . originated information to the at least one of the plurality of destination processors,” which employs the definite article “the,” refers to the antecedent “at least one of a plurality of destination processors in the electronic mail system.” ‘960 patent, claim 1 (emphasis added). RIM also correctly argues that, based on this antecedent relationship, a destination processor accessible by RF transmission must also be “in an electronic mail system.” See generally Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1356 (Fed. Cir. 2003) (“[I]t is a rule of law well established that the definite article ‘the’ particularizes the subject which it precedes. It is a word of limitation as opposed to the indefinite or generalizing force of ‘a’ or ‘an.‘” (internal quotation omitted)).
However, the conclusions RIM seeks to advance do not follow from its assertion. One conclusion RIM advances, at least at one point in its briefing, is that this “dual pathways” assertion suffices to demonstrate non-infringement, arguing that “[t]he Blackberry® system avoids this requirement since the Blackberry® handhelds are only reachable through an RF pathway.” That sentence, which is the extent of RIM‘s analysis on this point, is simply insufficient to support a non-infringement determination. The argument relies on the implied premise that the BlackBerry handhelds are not in the electronic mail system. As defined by the district court, and approved above, an
Another conclusion RIM attempts to draw from its assertion that at least one destination processor must be in the electronic mail system and accessible by the RF information transmission network is that there must be a “dual pathway” to the same destination processor. The term “dual pathways” is not a claim term, but the notion of dual communication paths was argued by Campana during the prosecution of the ‘960 patent and incorporated into the structure of the claims of the patent. In distinguishing his invention over a prior art reference, Zabarsky, Campana argued that Zabarsky “would not meet the claims because of the recited dual communication paths involving telephonic and wireless communications which use the claimed interface switch between the electronic mail system and the RF information transmission system.” The
RIM‘s correct assertion that at least one destination processor must be in the electronic mail system and accessible by the RF information transmission network does not, by itself, yield the conclusion that at least one destination processor must be accessible by dual pathways, that is, by a wireline-only pathway as well as a wireline-and-wireless pathway. RIM concedes that the final paragraph of claim 1 does not establish that a single destination processor must be accessible by dual pathways.
RIM does argue, however, that during the prosecution of the ‘960 patent, Campana “urged a narrow definition of ‘electronic mail system’ to distinguish over the wireless messaging system of Zabarsky.” Thus, RIM ties its proposed “narrow definition” of “electronic mail system” to its dual pathways claim construction argument.
RIM also points to other statements Campana made in distinguishing the claimed invention over the Zabarsky reference. RIM argues that Campana‘s repeated reliance on a dual pathways requirement to distinguish over Zabarsky acted as a disclaimer of any claim interpretation that avoids a dual pathways requirement. NTP responds that there was no disavowal or disclaimer limiting Campana‘s invention to a system having dual pathways to the same destination processor. NTP argues that, instead, Campana simply distinguished Zabarsky as a purely wireless system, and noted that Zabarsky did not teach the claimed combination of a wireless system and an electronic mail system. Further, NTP contends that the examiner clearly stated his understanding that no “dual pathways” requirement exists.
RIM emphasizes the following passage from the prosecution history:
[T]he claims as described above . . . define the combination of an electronic mail system and an RF information transmission system which transmits originated information from an originating processor to at least one destination processor using both an electronic mail system including a telephone network and an RF information transmission network which transmits originated information to at least one receiver which transfers the information to at least one destination processor. Thus, it is seen that the Examiner has not provided a teaching in the prior art or reasoning justifying a conclusion of obviousness with regard to the claimed system and method of operation of the electronic mail system and the RF
The prior art of record fails to teach or fairly suggest a system for transmitting originated information from an originating processor in an electronic mail system to a destination processor in the electronic mail system comprising an RF information transmission network . . . with an address of the destination processor added at the originating processor [and] the electronic mail system transmits other originated information from an originating processor to a destination processor in the electronic mail system through a wireline without transmission using the RF information transmission network.
Notice of Allowability, Feb. 7, 1995, at 2. Although information is transmitted to various destination processors via RF or wireline transmission systems, there is no requirement that there must be “dual” transmission pathways to the same destination processor. Thus, we conclude that the asserted claims of the ’960 and ’670 patents do not include the “dual pathways” limitation contended by RIM.
e. “Separate and Distinct” RF Receiver and Destination Processor
In its summary judgment motion, RIM argued to the district court that certain of the asserted claims required that the RF receiver be distinct and separable from the destination processor. This “separate and distinct” limitation is, in RIM’s view, applicable to all claims of the ’960, ’670, and ’592 patents, and to claims 248, 309, 313, and 317 of the ’451 patent. The court declined to impose this limitation, stating that “while it appears that Campana envisioned a portable and mobile RF receiver that is physically separate from the bulkier destination processor (i.e., laptop or desktop computer) the claims do not impose this requirement.” Non-Infringement Order, slip op. at 10-11. We agree with the district court.
RIM focuses its argument as to this alleged claim limitation on two claim terms, “transfer,” which can be found in the asserted claims of the ’960 and ’670 patents, and “connected to” or “coupled to,” which can be found in claims 150, 278, and 287 of the ’592 patent and claims 248, 309, 313, and 317 of the ’451 patent. Repeated statements in the specification echo these claim terms. See, e.g., id. at col. 18, ll. 50-53 (“The RF receiver automatically transfer [sic] the information to the destination processor upon connection of the RF receiver to the destination processor.” (emphasis added)); id. at col. 20, l. 66 – col. 21, l. 1 (“The RF receiver may be detached from the destination processor during reception of the information with a memory of the RF receiver storing the information.” (emphasis added)).
Our case law requires a textual “hook” in the claim language for a limitation of this nature to be imposed. Generally, “a party wishing to use statements in the written description to confine or otherwise affect a patent’s scope must, at the very least, point to a term or terms in the claim with which to draw in those statements. Without any claim term that is susceptible of clarification by the written description, there is no legitimate way to narrow the property right.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
In an effort to justify the limitation it urges, RIM first points to the claim term, “transfer.” In the ’960 patent, for example, claim 1 requires that the “RF receiver . . . transfer[] the originated information to the at least one of the plurality of destination processors.” ’960 patent, col. 49, ll. 15-18. According to RIM, the fact that information must be “transferred,” i.e., moved from one place to another, implies that the RF receiver and destination processor are separately housed. This reading stretches the meaning of “transfer.” As NTP points out, a “transfer” of information can equally occur between two entities that are physically housed together. The suggestion that information will be “transferred” between these two entities does not require the physical separation of those entities.
RIM also cites the claim terms “connected to” and “coupled to” used in the ’592 patent. In that patent, independent claim 150 (from which asserted claims 278 and 287 depend) describes
a wireless receiver connected to the one mobile processor with the one mobile processor receiving the information contained in the electronic mail after the identification of the wireless device is detected by the wireless receiver in a broadcast by the wireless system.
301. A communication system comprising: mobile devices, each mobile device comprising a wireless device connected to a mobile processor which executes electronic mail programming to function as a destination of electronic mail, the wireless device after receiving a broadcast of information contained in the electronic mail and an identification of the wireless device transmits the information to the connected mobile processor . . . .
Id. at col. 53, ll. 32-40. Webster’s Third New International Dictionary 480 (1993) defines “connected” as “to join, fasten, or link together.” Although “connected” more strongly connotes a physical link between the mobile processor and the wireless receiver than does the term “transfer,” it still does not require that the mobile processor and wireless receiver be physically disposed in separate housings. A “connection” can occur between these two devices regardless of whether they are housed separately or together. Indeed, the two components could be connected, joined, or linked together by wires or other electrical conductors and still be located in the same housing or even on the same circuit board. Because the claim language does not support RIM’s interpretation, we agree with the district court and decline to impose this additional restriction on the claims.
f. “Additional Processor Outside an Electronic Mail System”
RIM challenges the district court’s construction of the term “additional processor outside an electronic mail system.” As NTP correctly points out, this term is not present in any of the claims currently before us on appeal. RIM’s principal justification for this court to construe the “additional processor” limitation is simply that the district court
B. Infringement
RIM makes three arguments challenging the district court’s judgment of infringement. First, RIM argues that the district court erred in its claim constructions, and under the correct claim constructions RIM’s products do not infringe. Second, RIM contends that because the BlackBerry Relay is located in Canada, as a matter of law RIM cannot be held liable for infringement under
1. Claim Construction
A determination of infringement is a two-step process. The court must first correctly construe the asserted claims, and then compare the properly construed claims
A jury verdict will be set aside, based on erroneous jury instructions, if the party seeking to set aside the verdict can establish that “those instructions were legally erroneous,” and that “the errors had prejudicial effect.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1281 (Fed. Cir. 2000); see also Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1373 (Fed. Cir. 2002). More specifically, “a party seeking to alter a judgment based on erroneous jury instructions must establish that (1) it made a proper and timely objection to the jury instructions, (2) those instructions were legally erroneous, (3) the errors had prejudicial effect, and (4) it requested alternative instructions that would have remedied the error.” Advanced Display, 212 F.3d at 1281 (internal citations omitted). “Prejudicial legal error exists when it ‘appears to the court [that the error is] inconsistent with substantial justice.’” Id. at 1283 (quoting
At trial, RIM made a timely objection to the jury instructions pertaining to the district court’s claim constructions, including its erroneous construction of the term “originating processor.” See J.A. at 14102-03. RIM also requested alternative instructions that would have remedied the error, including specifically an alternative jury instruction embodying its proposed claim construction of the term “originating processor.” See J.A. at 8368-73 (instruction 16). But to set aside the jury verdict, RIM must also establish that the error was prejudicial. Advanced Display, 212 F.3d at 1281.
Prior to trial, RIM proffered a declaration by its expert Dr. Reed arguing that the accused BlackBerry products and services do not infringe under RIM’s proposed claim constructions as contained in RIM’s proposed jury instructions. See J.A. at 10115-71 (Reed declaration). This proffer addressed, inter alia, infringement as it relates to the “originating processor” limitation. However, the district court did not admit the Reed declaration into evidence or address the merits of the contentions in the Reed declaration. While RIM asserts that the court excluded all testimony arguing claim limitations different than or inconsistent with the court’s claim construction, the court’s actual ruling appears to have been directed only to the “separate and distinct physical housing argument [and] the RF indicator argument.” See J.A. at 12047-48. At the trial, testimony was presented with respect to infringement of the claims as construed by the district court. However, the extent to which the trial testimony and the exhibits actually
On remand, if RIM can establish that the erroneous claim construction prejudiced the jury’s verdict as to the affected claims, the district court will have to set aside the verdict of infringement as to those claims. The affected claims are those that include the term “originating processor;” namely, claim 15 of the ’960 patent; claim 8 of the ’670 patent; and claim 40 of the ’592 patent (through its parent claim 25).10
2. Section 271(a)
Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
Ordinarily, whether an infringing activity under
In its complaint, NTP alleged that RIM had infringed its patents by “making, using, selling, offering to sell and importing into the United States products and services, including the Defendant’s BlackBerry™ products and their related software . . . .” Compl. ¶ 19. NTP’s theory of infringement tracks the language of
The district court declined to grant summary judgment in RIM’s favor. The court agreed that “to establish direct infringement under
On appeal, RIM argues that the district court erred in its interpretation of the infringement statute. RIM does not appeal the jury’s finding that its customers use, i.e., put into service, its systems and methods for transmitting email messages. RIM has, however, appealed whether any direct infringement, by it or its customers, can be considered “within the United States” for purposes of
This court reviews the statutory construction of a district court de novo. Merck & Co. v. Kessler, 80 F.3d 1543, 1549 (Fed. Cir. 1996). In our interpretation of the statute, we “give the words of a statute their ordinary, contemporary, common meaning, absent an indication Congress intended them to bear some different import.” Williams v. Taylor, 529 U.S. 420, 431 (2000) (internal quotation marks omitted). We begin with the words of the statute, see Trayco, Inc. v. United States, 994 F.2d 832, 836 (Fed. Cir. 1993), but may consult dictionaries, see Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367, 1371 (Fed. Cir. 2003), and legislative history, see Neptune Mut. Ass’n Ltd. of Bermuda v. United States, 862 F.2d 1546, 1549 (Fed. Cir. 1988), if necessary to construe the statute.
The question before us is whether the using, offering to sell, or selling of a patented invention is an infringement under
RIM argues that Deepsouth answers this question. However, Deepsouth did not address this issue. In Deepsouth, 406 U.S. at 527, the Supreme Court considered whether
Although Deepsouth does not resolve these issues, our predecessor court’s decision in Decca Ltd. v. United States, 544 F.2d 1070 (Ct. Cl. 1976), is instructive. In Decca, the plaintiff sued the United States for use and manufacture of its patented invention under
Decca provides a legal framework for analyzing this case. As our predecessor court concluded, infringement under
a. “uses . . . within the United States”
The situs of the infringement “is wherever an offending act [of infringement] is committed.” N. Am. Philips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994) (“[Section 271] on its face clearly suggests the conception that the ‘tort’ of
The use of a claimed system under
We reach a different conclusion as to NTP’s asserted method claims. Under
Because a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited. This is unlike use of a system as a whole, in which the components are used collectively, not individually. We therefore hold that a process cannot be used “within” the United States as required by
Thus, we agree with RIM that a finding of direct infringement by RIM’s customers under
b. “offers to sell, or sells”
Because we conclude that RIM’s customers could not have infringed the asserted method claims of the ’960, ’172, and ’451 patents under the “use” prong of
Because the relevant precedent does not address the issue of whether a sale of a claimed method can occur in the United States, even though the contemplated
In Enercon GmbH v. International Trade Commission, 151 F.3d 1376 (Fed. Cir. 1998), this court considered the meaning of the phrase “sale for importation” in the International Trade Commission‘s governing statute,
Congress has consistently expressed the view that it understands infringement of method claims under
1. A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having the owner‘s consent from the acts of: making, using, offering for sale, selling or importing for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent third parties not having the owner‘s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, art. 28, H.R. Doc. No. 103-316, at 1634 (1994) (footnote omitted). The agreement makes clear that claimed processes are to be directly protected only from “the act of using the process.” The joint committee report from the Senate reflects the same understanding: “The list of exclusive rights granted to patent owners is expanded to preclude others from offering to sell or importing products covered by a U.S. patent or offering to sell the products of patented processes.” S. Rep. 103-412, at 230 (1994). Thus, the legislative history of
In the context of the on sale bar, we have held that a method claim may be invalid if an offer to perform the method was made prior to the critical date. Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1328 (Fed. Cir. 2001) (“The on sale bar rule applies to the sale of an ‘invention,’ and in this case, the invention was a process, as permitted by § 101. As a result, the process involved in this case is subject to
In this case, we conclude that the jury could not have found that RIM infringed the asserted method claims under the “sells” or “offers to sell” prongs of
c. “imports into the United States”
Because the jury‘s instruction on direct infringement by RIM included the act of importing, we must consider next whether the jury could have found that RIM imported any of the processes covered by the asserted method claims in violation of
3. Section 271(f)
RIM argues that it could not infringe under
The arguments of the parties are directed to the system claims but do not address infringement of the method claims under
The statute provides:
(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial non-infringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
As discussed supra,
Recently, the court in Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325, 1338-41 (Fed. Cir. 2005), addressed
4. Section 271(g)
The next question is whether RIM can be said to “import[] into . . . or offer[] to sell, sell[], or use[] within the United States a product which is made by a process patented in the United States” and thus infringe under
RIM argues that the product created by the NTP process is data or information, and that Bayer AG v. Housey Pharmaceuticals, Inc., 340 F.3d 1367 (Fed. Cir. 2003), held that
In Bayer, we considered whether research data from the performance of a method to identify substances, which inhibit or activate a protein affecting characteristics of the cell, was “a product which is made by a process.” Id. at 1370. We held that “the production of information is not covered” by
AT&T, State Street Bank, Alappat, and Chakrabarty do not command a different result because
For the foregoing reasons, the district court erred in not holding as a matter of law that
5. Denial of Judgment as a Matter of Law
“The grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to patent law, reviewed under the law of the regional circuit in which the appeal from the district court would usually lie.” Summit Tech., Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed. Cir. 2004). Under the law of the Fourth Circuit, the denial of a motion for judgment as a matter of law is reviewed de novo. Johnson v. MBNA Am. Bank, NA, 357 F.3d 426, 431 (4th Cir. 2004). “We must view the evidence in the light most favorable to . . . the nonmovant, and draw all reasonable inferences in [the nonmovant‘s] favor without weighing the evidence or assessing the witnesses’ credibility.” Id. “The question is whether a jury, viewing the evidence in the light most favorable to [the nonmovant], could have properly reached the conclusion reached by this jury.” Baynard v. Malone, 268 F.3d 228, 235 (4th Cir. 2001). “We must reverse [the denial of a motion for JMOL] if a reasonable jury could only rule in favor of [the movant]; if reasonable minds could differ, we must affirm.” Id.
To establish that no reasonable jury could have found infringement, RIM challenges the testimony of NTP‘s expert, Dr. Vernon Rhyne, who opined during trial
RIM next contends no reasonable jury could have found the asserted claims to be not invalid over certain “AlohaNet” prior art, either alone or in combination with a 1975 article by the AlohaNet inventor, Dr. Abramson. AlohaNet was a pioneering network system developed at the University of Hawaii. According to RIM, the AlohaNet system facilitated communications over both wireline and wireless networks as early as 1973. At trial, RIM‘s expert, Dr. Reed, testified that the AlohaNet system met each of the asserted claim limitations. On appeal, RIM attempts to rebut the three distinctions drawn by NTP at trial to differentiate the Campana invention from the prior art. In response, NTP emphasizes that RIM‘s invalidity argument was premised on the testimony of Dr. Reed, which the jury found not to be credible. In its JMOL order, the district court reached this same conclusion: “[M]uch of Dr. Reed‘s direct testimony was conclusory and failed to analyze and explain the claim language and which components of the prior art embodied each element of the asserted claims.” JMOL Order, slip op. at
C. Evidentiary Rulings
Finally, RIM contests three evidentiary rulings made by the court: (1) the exclusion of the testimony of Larry Nixon, a patent attorney who would have testified on behalf of RIM that under the district court‘s claim construction, the claims were invalid for want of an adequate written description, see
III. CONCLUSION
In conclusion, we alter the district court‘s construction of the claim term “originating processor.” We affirm the remainder of the district court‘s claim
On remand, if prejudice is shown with respect to the claims containing the “originating processor” limitation, and because the jury verdict did not specify the amount of infringing sales attributed to each individual patent claim, or the specific devices and services determined by the jury to infringe each separately asserted claim, the district court will have to determine the effect of any alteration of the jury verdict on
IV. COSTS
Each party shall bear its own costs.
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED